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Emily Xiang is an IPilogue Writer, the President of the Intellectual Property Society of Osgoode (IPSO), and a 2L JD candidate at Osgoode Hall Law School.

So far, intellectual property law has protected some pretty wild things – biological , football turfs, even methods for building the . But, is it possible to protect an experience? In June 2019, major amendments to Canada’s (RSC 1985 c T-13) came into force, including the protection of non-traditional trademarks consisting, in whole or in part, of sounds, holograms, moving images, scents, tastes, colours, three-dimensional shapes, modes of packaging goods, textures, and positioning of signs. This legislative addition is critical when assessing how businesses and marketers may potentially protect multisensory experiences (MSEs). However, certain barriers arise in applying traditional intellectual property principles to such sui generis subject matters. Let’s take a look at some examples.

Sonic Seasoning: Combining Music with Flavour

refers to the multisensory phenomenon that occurs when the sounds that one hears have a psychological effect on one’s taste perception. Since this discovery, in the food and beverage industry have sought to carve out a unique space in the marketplace for food and sound pairings, making the combination itself the centrepiece for more extensive marketing campaigns invoking a particular “atmosphere” or “experience.” For instance, in 2020, published an audio content series that illustrated six of their cheeses using specifically curated sounds. Beer companies like have also embarked on projects to provide consumers with “” drinking experiences through packaging design, music, taste, and photography.[1]

While the amendments to the Trademarks Act now protect and separately, brand owners should be aware that applications for such marks require that the taste or sound meet the prescribed standards of distinctiveness and non-functionality. On distinctiveness, evidence would need to be submitted to demonstrate that the brand’s reputation of the mark in question is sufficient to trump another primary meaning that a member of the public might attribute to the taste or sound. The non-functionality standard may also cause issues for applicants seeking trademark protection for tastes since the primary purpose of foods and beverages is to provide or impart flavour.

that mark owners seeking trademark protection for MSEs should instead apply for “” protection, a “distinguishing guise” or “a mode of wrapping or packaging wares.” While the applicant would still need to show distinctiveness and non-functionality, trade dress protection seems to most adequately address the overall “concept” or “feel” of a product, so long as the features are source-identifying.

Trademarking the “Consumer In-Store Experience”

Auditory cues can pair with other sensory tools to market products and services. Research into has shown that such factors as lighting, flooring, music, decor, and even fragrance play a role in driving consumer experience and behaviour. In his book In Pursuit of Silence: Listening for Meaning in a World of Noise, George Prochnik discusses the soundscapes developed by Abercrombie & Fitch, in which “loud music and spotlit darkness [are used to] introduce a state of celebratory arousal. Indeed, if you walk around your local branch of Abercrombie & Fitch, you may feel that there would be something downright frigid in considering your purchase too closely.” are increasingly used by to conjure particular consumer experiences, whether it be in retail stores, car showrooms, sports stadiums, airports, banks, or apartment buildings. For instance, infuses the air of its luxurious line of “Park Hyatt” hotels with a signature fragrance in the hopes of creating an association in the minds of its customers between the scent and the level of luxury at the Park Hyatt.

In 2013, successfully applied for intellectual property protection of the design and layout of its signature retail store. The USPTO granted the tech giant an arguably broad trademark that covered various features of the space, including clear glass storefront surrounded by a paneled facade, rectangular recessed lighting units covering the ceiling, and rectangular tables arranged in lines covering the floor space. Such details can make up one’s entire ‘’ of an Apple store, thereby qualifying for MSE trademark protection. 

Conclusion

As the scope of intellectual property law continues to expand, questions arise as to how existing IP regimes can potentially respond to increasingly amorphous and novel subject matter. The inclusion of non-traditional marks in Canadian trademark legislation represents an opportunity for mark owners to protect subtle elements of their brands. It is an area of the law we should keep a close eye on in years to come.

[1] Mark Edward Blankenship Jr., “With Eyes to See and Ears to Beer: Navigating Multisensory Intellectual Property Rights in The Craft Beer Industry”, (2021) 21:4 Wake For Intellect Prop Law J 397.

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Citing the relevant international legislation, namely, of the , of the Agreement and of the WIPO , the ECJ attempted to tread the fine line between the protection of the rights of users versus those the copyright owners. It clarified that computer programs were indeed protectable under EU and international copyright law, so long as they qualified as original literary works of expression, going so far as to include the preparatory steps leading to the development of the source or object codes under the umbrella of copyrightability. As a trade-off however, the Court also stressed that the laws for authorial protection only extend to prevent unauthorized reproduction, and hence, a contract could not be employed to prevent lawful third-party use. Like Adv-Gen. Bot’s opinion, the ECJ also referenced the Computer Programs () and Copyright () Directives of the European Commission, stating that the authorization of the rightsholder is not required when decompilation is necessary to achieve interoperability. And turning to national UK law, the ECJ pointed out that while of the treats copyright as an exclusionary property right in literary, dramatic, musical or artistic works, of the same act deems copying for research, study or testing of the function of the program as acceptable fair dealing uses of a computer program.

Analytically, the ECJ harkened back to questions asked in the preliminary ruling, grouping them into three categories. In the first part, it dealt with whether the functionality, programming language and data files used to exploit the functionality can be considered within the realm of copyrightable expression under of Directive 91/250. As per this aspect, the source and object codes of a program were found to be copyright-protected, since they led to the “reproduction or subsequent creation of the program.” However, the graphic user interface, which constituted the functionality of the program, and therefore only enabled users to utilize the program and not to reproduce was not copyrightable expression under the Directive. The WCJ thus determined that neither the functionality of a computer program, nor its programming language were worthy of copyright protection.

In the second stage of the analysis, the ECJ considered whether of Directive 91/250 allows a party that has legally obtained a copy of a program to use, study and test the program with a view to discovering the underlying principles in order to perform a function that would go beyond the usual purposes contained within the license of the product (e.g. the development of a parallel program using the same programming language). By framing these underlying principles as the ideas at the core of the expression (the copyrighted source program), the ECJ then determined that Article 5(3) of Directive 91/250 does not extend protection over these, and as such, allows the discovery of these through decompilation or reverse engineering. The ECJ clarified that this allowance was naturally based on circumstances where the defendant party did not have access to the plaintiff’s source code, and hence, could only discover the underlying principles through original research, study and testing.

In the final category, the ECJ considered whether of Directive 2001/29/EC can be interpreted as meaning that the reproduction of certain elements used to describe one program in the manual, or the contents of a second program can be deemed as infringement. While agreeing that the plaintiff’s user manual was indeed a protected literary work, the ECJ also said that the individualized components of a computing language (keywords, syntax, commas, commands, defaults, figures etc.) could only be considered as creating an infringable work if a reproduction of these was also a copy of the “intellectual creation of the author of the user manual.” The question however, as left open for national courts to consider.

The ECJ’s attempts to balance the competing rights of users and the copyright owners of computer programs clearly come to the fore in this ruling. While this case’s most obvious implications mean that the ECJ heeded Adv.-Gen Bot’s warning and prevented the unprecedented monopoly of functionality, it remains to be seen whether both copyright owners and users can rest easy, especially given the vast sums of capital that are at stake in the often-precarious computer software industry.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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